MUSTANG ENTERPRISES v. PLUG-IN STORAGE SYS.

Plug-In Storage Systems, Inc. ("Plug-In") has moved to disqualify the law firm of Hill, Steadman & Simpson ("Hill Firm") as counsel for Mustang Enterprises, Inc. ("Mustang") in this patent action. At this point the parties have briefed the issues that this Court had identified--issues that, though not exhaustive of the grounds on which the motion might be granted, could well be sufficient for that purpose. That limitation on the issues required to be briefed has proved to be appropriate. For the reasons stated in this memorandum opinion and order, the motion is granted.

Facts

Hill Firm is a Chicago-based intellectual property firm of some 30 lawyers. Bachman & LaPointe P.C. ("Bachman Firm") is a New Haven, Connecticut firm of four lawyers that is affiliated with Hill Firm:

1. On the right-hand masthead of Hill Firm's letterhead (Plug-In Motion Ex. M) it lists, immediately below the addresses and telephone numbers of its own Chicago and Washington, D.C. offices, "Affiliated Firm Bachman & LaPointe, P.C.,"
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followed by the names of all four Bachman Firm lawyers (in just the same way that the left-hand masthead lists Hill Firm's own partners, associates and its lawyers related on an of-counsel basis) and by Bachman Firm's address and telephone number.

2. On the right-hand masthead of Bachman Firm's letterhead (Plug-In Motion Ex. Q) it lists "Affiliated Firm Hill, Steadman & Simpson," followed by the addresses and telephone numbers of the Chicago and Washington, D.C. offices of Hill Firm.

3. Beginning with the 1988 edition of Martindale-Hubbell, Hill Firm's listing has included, just below the information as to its own Chicago office, the address and telephone number of its "Arlington, Virginia Office" and then (in an identical type size, style and format) the information as to its "New Haven, Connecticut Affiliated Office"--Bachman Firm's name, address and telephone number.

4. Also beginning with the 1988 edition Bachman Firm's Martindale-Hubbell listing has referred to its "Chicago, Illinois Affiliated Office"--giving Hill Firm's name, address and telephone number. Since 1991 Bachman Firm has been retained by Plug-In as its patent counsel. When all of the legal files were transferred to Bachman Firm from the law firm that had previously been retained by Plug-In, those files included a substantial number of documents dealing with the patents in suit in this litigation (in which Mustang seeks a declaratory judgment as to noninfringement of two Plug-In patents by Mustang's current product or, if the patents are read so that infringement exists, a declaration that the patents are invalid as so read). Indeed, Plug-In's most recent submission
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discloses that the documentation delivered to Bachman Firm included among other things (1) papers from the prior 1986 litigation between Plug-In and Mustang dealing with one of those patents, including an extended opinion letter on the subject from the former lawyer for Plug-In, (2) a 1990 letter from Plug-In's former counsel to a Japanese law firm discussing at length the proposed registration of one of the two patents now in suit, together with a series of later communications on the same subject, and (3) correspondence dealing with Canadian patents corresponding to the United States patents now in suit.

Bachman Firm is still in possession of the documents, and Plug-In is still Bachman Firm's client. It is really unnecessary to go further to recognize that if Bachman Firm were directly handling the current litigation on Mustang's behalf it would be improperly advantaged by knowledge of the information in its possession--and, as the ensuing discussion reflects, it would therefore be disqualified from representing Mustang.

Effect of Bachman Firm's Affiliation with Hill Firm

Since November 12, 1991 a version of the Rules of Professional Conduct (adapted from the American Bar Association's Model Rules and from the Illinois Supreme Court's version of those rules) has been in effect in this District Court. Because of this Court's extensive background as a practitioner in the area of lawyers' professional responsibility,
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it had been assigned the task of drafting a proposed set of those Rules for adoption by its colleagues. That assignment included consideration of the extent to which this District Court should adhere to the ABA version or, where the Illinois Supreme Court had departed from the Model Rules in its own early 1990 adoption, to adhere to that Illinois departure.

Here is the Rule most relevant to the current dispute--Rule 1.10(a), which this District Court adopted in the identical language that has been employed in the Illinois version:

No lawyer associated with a firm shall represent a client when the lawyer knows or reasonably should know that another lawyer associated with that firm would be prohibited from doing so by Rules 1.7, 1.8(c) or 1.9, except as permitted by Rules 1.10(b), (c), or (d), or by Rule 1.11 or Rule 1.12.

While lawyers are associated in a firm, none of them shall knowingly represent a client when any one of them practicing alone would be prohibited from doing so by Rules 1.7, 1.8(c), 1.9 or 2.2.

But that departure did not carry any intended change in meaning for present purposes. Here is how the Illinois Supreme Court's Committee on Professional Responsibility (chaired by George Overton, Esq.), which was responsible for generating the draft text submitted to the Supreme Court in June 1989 and thereafter adopted by that Court, spoke of the source of Illinois Rule 1.10:

Illinois Rule 1.10 is largely a Committee draft, although much language has been borrowed from ABA Model Rule 1.10.

Rule 1.10(a) roughly tracks ABA Model Rule 1.10(a). And the only departures from the ABA version then referred to by the Illinois Supreme Court's Committee are ...

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